Patent Owners versus the Supreme Court: Changing the Law Underlying Patent Eligible Subject Matter

• Published in: The Journal of corporation law Vol. 44; no. 1; pp. 187 - 204
• Main Author: Winborn, Brett
• Format: Journal Article
• Language: English
• Published: Iowa City University of Iowa Journal of Corporation Law 22.09.2018; University of Iowa, College of Law
• Subjects: Bar associations; Intellectual property; Intellectual property law; Inventions; Inventors; Judgments (Law); Laws, regulations and rules; Organizations; Patent law; Patentability; Proposals; United States > US
• ISSN: 0360-795X

Patent eligible subject matter, as stated in 35 U.S.C. 101, includes "any new and useful process, machine, manufacture, or composition of matter." Courts excepted laws of nature, natural phenomena, and abstract ideas from patent eligible subject matter, and recent Supreme court decisions have created uncertainty and controversy as to what is and should be eligible for patenting. This Note discusses proposals to clarify patent eligible subject matter through legislation by three intellectual property advocacy organizations, the Intellectual Property Owners Association (IPO), American Intellectual Property Law Association (AIPLA), and American Bar Association Section of Intellectual Property Law (ABA). This Note compares and contrasts two proposals to amend 35 U.S.C. Section 101, one a joint proposal from the IPO and AIPLA and the other from the ABA. The proposals are substantively similar but take different approaches. The IPO-AIPLA proposal replaces the above three judicial exceptions with two new but similar ones, while the ABA proposal retains the exceptions but restricts only patent claims that would preempt the use of an excepted type of subject matter. This Note recommends that patent owners, inventors, and other interested parties advocate for the ABA proposal because it more closely follows the Supreme Court's stated concern of preemption of the patenting of laws of nature, natural phenomena, and abstract ideas.